Samsung Counterclaim Sept. 14 2012

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Case No. 12-CV-00630-LHK SAMSUNG’S ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS TO AMENDED COMPLAINT

QUINN EMANUEL URQUHART & SULLIVAN, LLP Charles K. Verhoeven (Bar No. 170151) [email protected] Kevin A. Smith (Bar No. 250814) [email protected] 50 California Street, 22nd Floor San Francisco, California 94111 Telephone: (415) 875-6600 Facsimile: (415) 875-6700 Kevin P.B. Johnson (Bar No. 177129 (CA); 2542082 (NY)) [email protected] Victoria F. Maroulis (Bar No. 202603) [email protected] 555 Twin Dolphin Drive, 5th Floor Redwood Shores, California 94065 Telephone: (650) 801-5000 Facsimile: (650) 801-5100 William C. Price (Bar No. 108542) [email protected] Patrick M. Shields (Bar No. 204739) [email protected] 865 South Figueroa Street, 10th Floor Los Angeles, California 90017-2543 Telephone: (213) 443-3000 Facsimile: (213) 443-3100

STEPTOE & JOHNSON, LLP John Caracappa (pro hac vice) [email protected] 1330 Connecticut Avenue, NW Washington, D.C. 20036 Telephone: (202) 429-6267 Facsimile: (202) 429-3902

Attorneys for SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC. and SAMSUNG TELECOMMUNICATIONS AMERICA, LLC

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION

APPLE INC., a California corporation,

Plaintiff,

vs. SAMSUNG ELECTRONICS CO., LTD., a Korean corporation; SAMSUNG ELECTRONICS AMERICA, INC., a New York corporation; SAMSUNG TELECOMMUNICATIONS AMERICA, LLC, a Delaware limited liability company,

Defendants.

CASE NO. 12-CV-00630-LHK SAMSUNG DEFENDANTS’ ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS TO APPLE INC.’S AMENDED COMPLAINT; AND DEMAND FOR JURY TRIAL

Case5:12-cv-00630-LHK Document264 Filed09/14/12 Page1 of 32

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-1- Case No. 12-CV-00630-LHK SAMSUNG’S ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS TO AMENDED COMPLAINT

I. ANSWER TO AMENDED COMPLAINT

Defendants Samsung Electronics Co., Ltd. (“SEC”), Samsung Electronics America, Inc.

(“SEA”), and Samsung Telecommunications America, LLC (“STA”) (collectively, the “Samsung

Defendants”) by and through their undersigned counsel, in response to the Amended Complaint of

Apple Inc. (“Apple”) deny Apple’s allegations of patent infringement and answer Apple’s

Amended Complaint (“Complaint”) as follows:

THE NATURE OF THE ACTION

1. The Samsung Defendants deny knowledge or information sufficient to form a

belief as to the truth or falsity of the allegations in paragraph 1 of the Complaint and therefore

deny them.

2. Denied.

3. The Samsung Defendants admit that Apple sued Samsung in April 2011 in a case

entitled Apple Inc. v. Samsung Electronics Co., Ltd., et al., Case No. 5:11-cv-01846-LHK

(“Earlier Case”). The Samsung Defendants further admit that Samsung has released new

products since the Earlier Case was filed. The Samsung Defendants deny that they have engaged

in any illegal conduct alleged in the Complaint. Except as expressly admitted, the Samsung

Defendants deny the remaining allegations of paragraph 3 of the Complaint.

4. Denied.

THE PARTIES

5. The Samsung Defendants deny knowledge or information sufficient to form a

belief as to the truth or falsity of the allegations in paragraph 5 of the Complaint and therefore

deny them.

6. The Samsung Defendants admit that SEC’s principal offices are at the location

specified in paragraph 6 of the Complaint. The Samsung Defendants admit that SEC is South

Korea’s largest company and one of Asia’s largest electronics companies. The Samsung

Defendants admit that SEC designs, manufactures and provides to the U.S. and world markets a

wide range of products, including consumer electronics, computer components, and mobile and

entertainment products.


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7. The Samsung Defendants admit that SEA is a New York corporation, was formed

in 1978, and is a subsidiary of SEC. The Samsung Defendants admit that SEA’s principal offices

are located at 85 Challenger Road, Ridgefield Park, NJ, 07660. The Samsung Defendants admit

that SEA offers a full range of award-winning consumer electronics and IT products including, but

not limited to, televisions, Blu-ray disc players, digital cameras and camcorders, certain memory

storage devices, portable audio devices, printers and monitors. The Samsung Defendants admit

that STA, Samsung Electronics Canada, and Samsung Electronics Mexico S.A. de C.V. are

affiliates of SEA. The Samsung Defendants deny the remaining allegations of paragraph 7 of the

Complaint.

8. The Samsung Defendants admit that STA was formed in 1996 and is an indirect

subsidiary of SEC. The Samsung Defendants admit that STA is a Delaware limited liability

company with its principal place of business at 1301 East Lookout Drive, Richardson, Texas

75082. The Samsung Defendants admit that STA researches, develops, markets, sells and offers

for sale a variety of personal and business communications products throughout North America,

including handheld wireless phones, wireless communications infrastructure systems, fiber optics

and enterprise communication systems.

JURISDICTION

9. The Samsung Defendants admit that the Complaint purports to allege claims over

which this Court has subject matter jurisdiction under 28 U.S.C. § 1331 and 28 U.S.C. § 1338(a).

Except as expressly admitted, the Samsung Defendants deny the remaining allegations of

paragraph 9 of the Complaint.

10. The Samsung Defendants will not challenge personal jurisdiction over them by this

Court for purposes of this action. Except as expressly admitted, the Samsung Defendants deny the

remaining allegations of paragraph 10 of the Complaint.

VENUE AND INTRADISTRICT ASSIGNMENT

11. The Samsung Defendants will not contest the propriety of venue or intradistrict

assignment. The Samsung Defendants admit that pursuant to Civil L.R. 3-2(c), Intellectual

Property Actions are assigned on a district-wide basis and admits, on information and belief, that


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Apple’s principal place of business is within this District. The Samsung Defendants admit that

SEC has filed counterclaims against Apple in this District. Except as expressly admitted, the

Samsung Defendants deny the remaining allegations of paragraph 11 of the Complaint.

BACKGROUND

Apple’s Alleged Intellectual Property Rights

Apple’s Alleged Utility Patents

12. The Samsung Defendants admit that Apple purports to have attached as Exhibits 1-

8 to its Complaint U.S. Patent Nos. 5,946,647 (the “’647 Patent”), 6,847,959 (the “’959 Patent”),

8,046,721 (the “’721 Patent”), 8,074,172 (the “’172 Patent”), 8,014,760 (the “’760 Patent”),

5,666,502 (the “’502 Patent”), 7,761,414 (the “’414 Patent”), and 8,086,604 (the “’604 Patent”).

The Samsung Defendants deny knowledge or information sufficient to form a belief as to the truth

or falsity of the remaining allegations in paragraph 12 of the Complaint and therefore deny them.

Samsung’s Accused Products

13. Denied.

14. The Samsung Defendants admit to having released products in 2010 and early

2011. The Samsung Defendants deny the remaining allegations in paragraph 14 of the

Complaint.

15. Denied.

16. The Samsung Defendants deny that any of the products listed in paragraph 16 of

the Complaint infringe any of the alleged patent rights Apple purports to assert in the Complaint.

The Samsung Defendants admit that the following devices are Samsung products: Galaxy S III,

Galaxy S III – Verizon, Galaxy Note, Galaxy S II Skyrocket, Galaxy S II Epic 4G Touch, Galaxy

S II, Galaxy S II – T-Mobile, Galaxy S II – AT&T, Galaxy Nexus, Illusion, Captivate Glide,

Exhibit II 4G, Stratosphere, Transform Ultra, Admire, Conquer 4G, Dart, Galaxy Player 4.0,

Galaxy Player 5.0, Galaxy Note 10.1, Galaxy Tab 7.0 Plus, and Galaxy Tab 8.9. SEA denies that

it has sold in the United States any of the mobile phones listed in paragraph 16 of the Complaint.

Except as expressly admitted, the Samsung Defendants deny the remaining allegations in

paragraph 16 of the Complaint.


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Apple’s Infringement Allegations

17. The Samsung Defendants deny that they have infringed any of the Apple utility

patents identified in the Complaint. The Samsung Defendants aver that they do not infringe any

of the Apple utility patents identified in the Complaint, and therefore deny the implication that

they needed to obtain permission from Apple. Except as expressly admitted, the Samsung

Defendants deny the remaining allegations in paragraph 17 of the Complaint.

FIRST CLAIM FOR RELIEF

(Infringement of the ’647 Patent)

18. The Samsung Defendants repeat and incorporate the admissions and denials of

paragraphs 1 through 17 above as if fully set forth herein.

19. Denied.

20. Denied.

21. Denied.

22. Denied.

23. Denied.

SECOND CLAIM FOR RELIEF




25. Denied.

26. Denied.

27. Denied.

28. Denied.

29. Denied.

THIRD CLAIM FOR RELIEF





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31. Denied.

32. Denied.

33. Denied.

34. Denied.

35. Denied.

FOURTH CLAIM FOR RELIEF




37. Denied.

38. Denied.

39. Denied.

40. Denied.

41. Denied.

FIFTH CLAIM FOR RELIEF




43. Denied.

44. Denied.

45. Denied.

46. Denied.

47. Denied.

SIXTH CLAIM FOR RELIEF




49. Denied.


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50. Denied.

51. Denied.

52. Denied.

53. Denied.

SEVENTH CLAIM FOR RELIEF




55. Denied.

56. Denied.

57. Denied.

58. Denied.

59. Denied.

EIGHTH CLAIM FOR RELIEF




61. Denied.

62. Denied.

63. Denied.

64. Denied.

65. Denied.

The Samsung Defendants deny that Apple is entitled to the judgment sought, set forth in

paragraphs 1–9 on pages 11–12 of its Complaint.


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II. AFFIRMATIVE DEFENSES

66. By alleging the Affirmative Defenses set forth below, the Samsung Defendants do

not agree or concede that they bear the burden of proof or the burden of persuasion on any of these

issues, whether in whole or in part. For their Affirmative Defenses to the Complaint, the

Samsung Defendants allege as follows:

FIRST AFFIRMATIVE DEFENSE

(Failure to State a Claim)

67. Apple’s Complaint, on one or more claims for relief set forth therein, fails to state a

claim upon which relief can be granted.

SECOND AFFIRMATIVE DEFENSE

(Non-Infringement)

68. The Samsung Defendants have not infringed, and currently do not infringe, the

’647 Patent, ’959 Patent, ’721 Patent, ’172 Patent, ’760 Patent, ’502 Patent, ’414 Patent, or ’604

Patent (collectively, the “Apple Patents In Suit”) directly, indirectly, contributorily, by

inducement, under the doctrine of equivalents, or in any other manner.

THIRD AFFIRMATIVE DEFENSE

(Invalidity)

69. The claims of the Apple Patents In Suit are invalid for failure to satisfy one or more

of the conditions for patentability specified in Title 35 of the United States Code, including

without limitation §§ 101, 102, 103, and/or 112.

FOURTH AFFIRMATIVE DEFENSE

(Waiver, Acquiescence, and Estoppel)

70. Each of the purported claims set forth in Apple’s Complaint is barred by the

doctrines of waiver, acquiescence, and estoppel.

FIFTH AFFIRMATIVE DEFENSE

(Laches)

71. The Apple Patents In Suit are unenforceable, in whole or in part, against the

Samsung Defendants under the doctrine of laches.


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SIXTH AFFIRMATIVE DEFENSE

(Failure to Mitigate)

72. The claims made in the Complaint are barred, in whole or in part, because of

Apple’s failure to mitigate damages, if such damages exist.

SEVENTH AFFIRMATIVE DEFENSE

(Prosecution History Estoppel)

73. The relief sought by Apple as to the claims of one or more of the Apple Patents In

Suit is barred under the doctrine of prosecution history estoppel.

EIGHTH AFFIRMATIVE DEFENSE

(Prosecution Laches)

74. One or more of the Apple Patents In Suit are unenforceable, in whole or in part,

against the Samsung Defendants under the doctrine of prosecution laches.

NINTH AFFIRMATIVE DEFENSE

(Acts of Plaintiff)

75. On information and belief, the damages, if any, that were allegedly sustained by

Apple as a result of the acts complained of in the Complaint were caused in whole or in part or

were contributed to by reason of the acts, omissions, negligence, and/or intentional misconduct of

Apple, its agents, predecessors, and/or related entities.

TENTH AFFIRMATIVE DEFENSE

(No Equitable Relief)

76. As a result of Apple’s actions, Apple is not entitled to equitable relief, including

but not limited to Apple’s request for injunctive relief as it has an adequate remedy at law.

ELEVENTH AFFIRMATIVE DEFENSE

(No Willful Infringement)

77. Apple’s claims for enhanced damages and an award of fees and costs against the

Samsung Defendants have no basis in fact or law and should be denied.


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TWELFTH AFFIRMATIVE DEFENSE

(Actions of Others)

78. The claims made in the Complaint are barred, in whole or in part, because the

Samsung Defendants are not liable for the acts of others over whom it has no control.

THIRTEENTH AFFIRMATIVE DEFENSE

(No Causation)

79. Apple’s claims against the Samsung Defendants are barred because Apple’s

damages, if any, were not caused by the Samsung Defendants.

FOURTEENTH AFFIRMATIVE DEFENSE

(No Damage)

80. Without admitting that the Complaint states a claim, there has been no damage in

any amount, manner or at all by reason of any act alleged against the Samsung Defendants in the

Complaint, and the relief prayed for in the Complaint therefore cannot be granted.

FIFTEENTH AFFIRMATIVE DEFENSE

(No Irreparable Harm)

81. Apple’s claims for injunctive relief are barred because Apple cannot show that it

will suffer any irreparable harm from the Samsung Defendants’ actions.

SIXTEENTH AFFIRMATIVE DEFENSE

(Adequate Remedy at Law)

82. The alleged injury or damage suffered by Apple, if any, would be adequately

compensated by damages. Accordingly, Apple has a complete and adequate remedy at law and

is not entitled to seek equitable relief.

SEVENTEENTH AFFIRMATIVE DEFENSE

(Duplicative Claims)

83. Without admitting that the Complaint states a claim, any remedies are limited to the

extent that there is sought an overlapping or duplicative recovery pursuant to the various claims

against the Samsung Defendants or others for any alleged single wrong.


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ADDITIONAL DEFENSES

84. The Samsung Defendants reserve the right to assert additional defenses based on

information learned or obtained during discovery.

III. AMENDED COUNTERCLAIMS

1. SEC and STA (collectively, the “Samsung Patent Counterclaimants”), by and

through their undersigned counsel, seek declarations and judgments that Apple infringes U.S.

Patent No. 7,756,087 (the “’087 patent”), U.S. Patent No. 7,551,596 (the “’596 patent”), U.S.



Patent No. 6,226,449 (the “’449 patent”), and U.S. Patent No. 5,579,239 (the “’239 patent”).

2. SEC, SEA and STA (collectively, the “Samsung Counterclaimants”), by and

through their undersigned counsel, also seek declarations that each of the Apple Patents In Suit is

invalid and has not been and is not infringed by them.

NATURE OF THE ACTION

3. This is an action for patent infringement. Apple has infringed and continues to

infringe, contribute to the infringement of, and/or actively induce others to infringe Samsung’s

patents-in-suit.

4. This is also an action for a declaratory judgment of invalidity and non-infringement

of patents Apple purports to own.

THE PARTIES

5. Counterclaimant SEC is a corporation organized under the laws of Korea, with its

principal place of business at 416 Maetan-3dong, Yeongtong-gu, Suwon-City, Gyeonggi-do,

Korea 443-742.

6. Counterclaimant SEA is a New York corporation, with its principal place of

business at 85 Challenger Road, Ridgefield Park, NJ, 07660.


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7. Counterclaimant STA is a limited liability company organized under the laws of

Delaware, with its principal place of business at 1301 East Lookout Drive, Richardson, Texas

75082.

8. Upon information and belief, Apple is a corporation organized under the laws of

the state of California and has its principal place of business at 1 Infinite Loop, Cupertino,

California 95014. Upon information and belief, Apple imports into the United States, offers for

sale, sells and/or uses in the United States mobile electronic devices.

JURISDICTIONAL STATEMENT

9. The Samsung Patent Counterclaimants’ patent infringement counterclaims arise

under the patent laws of the United States, 35 U.S.C. §§ 1 et seq. The Samsung

Counterclaimants’ counterclaims for declaratory relief arise under the Declaratory Judgment Act,

28 U.S.C. § 2201, et seq. and the patent laws of the United States, 35 U.S.C. § 1, et seq.

10. The Court has jurisdiction over this action pursuant to 28 U.S.C. §§ 1331, 1338(a),

2201(a) and 2202.

11. This Court has personal jurisdiction over Apple for at least the following reasons:

(i) Apple maintains its principal place of business in this District; (ii) Apple has designated an

agent for service of process in the state of California; (iii) Apple regularly does business or solicits

business, engages in other persistent courses of conduct, and/or derives substantial revenue from

products and/or services provided to individuals in this District and in this state; and (iv) Apple

has initiated litigation in this judicial District in connection with this dispute.

12. Venue is proper in this district pursuant to 28 U.S.C. §§ 1391(b)-(c) and 1400(b).

13. An immediate, real, and justiciable controversy exists between the Samsung

Counterclaimants and Apple as to whether the Apple Patents In Suit are invalid and have not been

infringed.

FACTUAL BACKGROUND

14. From its inception as a small business in Taegu, Korea, SEC and its subsidiary,

Samsung Telecommunications America, LLC (collectively, “Samsung”), has grown to become

one of the world’s leading electronics companies, specializing in digital products and media,


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semiconductors, memory, and system integration. Today Samsung’s innovative and top quality

consumer products are widely recognized and appreciated across the globe.

15. Samsung has a long history of groundbreaking innovation across a wide range of

technologies. Samsung’s commitment to innovation is demonstrated in part by the billions of

dollars in research and development expenditures incurred over the years. From 2005 through

2011 alone, Samsung invested more than $43.6 billion in research and development. More than

a quarter of all Samsung employees—over 55,300 engineers overall, including about 15,600 in

telecommunications—daily engage in cutting-edge research and development projects.

16. Samsung’s commitment to innovation and investment in research and development

is demonstrated by the fact that, as of April 18, 2012, Samsung has in its portfolio 30,665 United

States patents, including 6,238 in the telecommunications field. Samsung is consistently ranked

ahead of other technology companies in terms of the number of issued patents obtained in the

United States.

17. Samsung’s research and development successes have propelled the company to its

status as the largest provider by volume of mobile devices in the world in 2011. Samsung also

sells more Android-based devices worldwide than any other company. In January 2012, a study

by research firm iGR found that Samsung is the most preferred seller of Android-based devices

among consumers.

18. Samsung has been a pioneer in the mobile device business sector since the

inception of the mobile device industry. In 1999, Samsung introduced its first multi-function

“smart phone” that provided both internet access (for sending e-mails and for electronic chatting)

and personal digital assistant (“PDA”) features. In 2000, Samsung introduced the Samsung

Uproar SPH-M100, the first cell phone with MP3-playback functionality. In 2001 Samsung

introduced into the United States the first PDA phone with a 256-color screen, selected as one of

the Best Products of 2001 by BusinessWeek magazine.

19. Also in 2001, Samsung broke the 1 cm technological barrier and stunned the

industry with an ultra-slim, lightweight flip phone that was only 9.8 mm thick. This innovation

sparked the ultra-portable mobile phone revolution spurring dozens of competitors to slim down


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the design form factors and develop their own portable mobile phone technology design. In

2002, Samsung unleashed the world’s first high-definition color LCD display suitable for mobile

devices. Now users could browse the web and view images directly from their mobile devices in

true color. In 2004, after selling over 20 million mobile handsets in the United States, Samsung

announced the first mobile phone that supported digital multimedia broadcast via satellite. Users

could now watch streaming high-quality multimedia content wherever they traveled.

20. Samsung announced the world’s first five and seven megapixel camera phones in

late 2004 and early 2005, respectively. Now, mid- to high-range digital camera functionality

could be integrated with mobile handsets, allowing users to snap life-like photos on-the-go. In

2008, Samsung became the leading mobile handset vendor in the United States.

21. Samsung has also continuously innovated in the area of mobile phone displays. In

2008 and 2009, Samsung released the industry’s first high resolution AMOLED display for a

mobile phone. The new display featured a 180-degree viewing angle and reduced power

consumption when compared to traditional LCD displays. Samsung’s clearer and brighter Super

AMOLED displays continued to improve mobile phone displays with 30% better color

reproduction over the best quality LCD displays.

22. Samsung’s innovative features, including the integrated high resolution cameras

and displays, were the result of the exceptional creativity and ingenuity of thousands of Samsung

engineers across the globe engaged in cutting-edge research and development projects.

23. Samsung’s innovative contributions to the mobile device industry have been

recognized through numerous awards for excellence in mobile device design. For example,

Samsung has received numerous “Red Dot Design Awards” in one of the largest international

design competitions. Similarly, a number of Samsung mobile devices have been awarded the “iF

Design Award” from the iF Industrie Forum Design e.V., based in Germany, for features such as

the user interface. The iF Designs Awards are among the most important in the world, as

evidenced by more than 11,000 annual entries from almost 50 countries. Samsung has also

received a number of “Good Design Awards” from the Japan Industrial Design Promotion


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Organization (JIDPO). Overall, Samsung’s mobile phones and devices have won close to 60

awards between 2007 and the beginning of 2011.

24. Samsung has consistently introduced market-relevant and innovative products,

including over 1,600 mobile phone models incorporating Samsung patented technology into the

U.S. marketplace since 1997. Over 332 million Samsung mobile devices have been sold since

1997.

25. Without the ability to enforce its intellectual property rights, such as those relating

to mobile device technology at issue in this action, Samsung would not be able to sustain the

extensive commitment to research and development that has enabled it to lead the way into

numerous improvements across a broad range of technologies, including the mobile device

technologies at issue in this action.

SAMSUNG’S INTELLECTUAL PROPERTY RIGHTS

26. Samsung’s patents relate to fundamental innovations that increase mobile device

reliability, efficiency, and quality, and improve user interface in mobile handsets and other

products. These innovations are critical to the user’s ability to communicate with family, friends,

and business associates reliably and effectively.

27. In communications systems, standards that prescribe the formats for sending

information are essential to ensure that mobile devices made by different manufacturers are

capable of interacting within a network. Because interoperability is key for communications, the

development of protocols that ultimately result in a technical standard is very important to

ensuring an efficient and functional system. As modern wireless networks carry more data at

higher data rates and service more users than their predecessors, continued innovation is essential

to keep pace with the increased demands on cellular networks. Samsung has been a leader in

developing the ideas and protocols needed to increase the efficiency, reliability, and functionality

of standards-based networks and the features available in these networks.

28. In the United States, one of the key standards governing cellular communications,

known as Wideband Code-Division Multiple-Access (W-CDMA), is published by 3GPP (Third

Generation Partnership Project). W-CDMA is one of the main technologies for the


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implementation of third-generation (3G) and more advanced cellular networks such as those of

AT&T and T-Mobile. W-CDMA is the most common form of air interface standard within the

Universal Mobile Telecommunications System (UMTS) telecommunications technologies

standard. Samsung has made key inventions that are part of these standards.

29. The Samsung W-CDMA and UMTS patents at issue in this action relate to

reliability, capacity, efficiency, compatibility, and functioning of mobile devices in W-CDMA and

UMTS networks.

30. Samsung’s technology increases the reliability of high speed communication and

enables mobile devices to handle higher data and voice transmissions and receptions.

31. Samsung’s technology increases the throughput and capacity of mobile device

networks. The rapid increase in usage of the mobile device networks has led to unprecedented

demand for increased capacity and throughput, particularly as data-demanding applications such

as video have become widespread. Samsung’s technology enables a given network to pack in

more users’ data without increasing the size of the frequency band used, and can therefore

accommodate a larger number of users.

32. Samsung’s patents also involve popular features used by many users today. For

example, Samsung’s patents involve the ability to control audio, synchronizing data across more

than one device, novel ways to display data, a touchscreen keyboard, and recording and

transmitting images, video, and speech.

33. Samsung has sold millions of mobile phones in the United States incorporating the

patented technology at issue here. For example, in 2010, Samsung sold over 24 million mobile

phones incorporating Samsung’s innovations.

34. The Samsung Galaxy S 4G, which incorporates certain patented technologies at

issue, has been heralded by CNET as a “fantastic Android smartphone” that delivers “fast data

speeds,” and PC Magazine named the Samsung Galaxy S 4G one of the best T-Mobile phones.

Samsung’s Captivate and Vibrant mobile phone models, which also incorporate the patented

technologies at issue here, were both named to PC Magazine’s Top 10 Smartphones list, with the


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Samsung Captivate being described as a “super-phone,” and the Samsung Vibrant being described

as T-Mobile’s “top smartphone.”

35. Apple has copied many of Samsung’s innovations in its Apple iPhone, iPod, and

iPad products. Apple continues to violate Samsung’s patent rights by using these patented

technologies without a license.

36. SEC is the owner of all rights, title, and interest in the ’087 patent, titled “Method

and Apparatus for Performing Non-Scheduled Transmission in a Mobile Communication System

for Supporting an Enhanced Uplink Data Channel,” which was duly and properly issued by the

United States Patent and Trademark Office (“USPTO”) on July 13, 2010. A copy of the ’087

patent is attached as Ex. 1.

37. SEC is the owner of all rights, title, and interest in the ’596 patent, titled “Method

and Apparatus for Signaling Control Information of Uplink Packet Data Service in Mobile

Communication System,” which was duly and properly issued by the USPTO on June 23, 2009.

A copy of the ’596 patent is attached as Ex. 2.

38. SEC is the owner of all rights, title, and interest in the ’470 patent, titled

“Audio/Video Device Having a Volume Control Function for an External Audio Reproduction

Unit by Using Volume Control Buttons of a Remote Controller and Volume Control Method

Therefor,” which was duly and properly issued by the USPTO on March 2, 2010. A copy of the

’470 patent is attached as Ex. 3.


“Multimedia Synchronization Method and Device,” which was duly and properly issued by the

USPTO on August 18, 2009. A copy of the ’757 patent is attached as Ex. 4.

40. SEC is the owner of all rights, title, and interest in the ’058 patent, titled “Data

Displaying Apparatus and Method,” which was duly and properly issued by the USPTO on June

19, 2007. A copy of the ’058 patent is attached as Ex. 5.

41. SEC is the owner of all rights, title, and interest in the ’179 patent, titled “Software

Keyboard System Using Trace of Stylus on a Touch Screen and Method for Recognizing Key


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Code Using the Same,” which was duly and properly issued by the USPTO on September 18,

2001. A copy of the ’179 patent is attached as Ex. 6.


“Apparatus for Recording and Reproducing Digital Image and Speech,” which was duly and

properly issued by the USPTO on May 1, 2001. A copy of the ’449 patent is attached as Ex. 7.

43. SEC is the owner of all rights, title, and interest in the ’239 patent, titled “Remote

Video Transmission System,” which was duly and properly issued by the USPTO on November

26, 1996. A copy of the ’239 patent is attached as Ex. 8.

APPLE’S ALLEGED CLAIMS AGAINST SAMSUNG

44. Apple claims to own the Apple Patents In Suit, which purport to cover technologies

relating to mobile electronic devices and tablet computers.

45. Apple has accused the Samsung Counterclaimants of infringing the Apple Patents

In Suit through the Samsung Counterclaimants’ alleged using, selling and/or offering to sell, in the

United States and/or importing into the United States one or more of the products known as the

Galaxy S III, Galaxy S III – Verizon, Galaxy Note, Galaxy S II Skyrocket, Galaxy S II Epic 4G

Touch, Galaxy S II, Galaxy S II – T-Mobile, Galaxy S II – AT&T, Galaxy Nexus, Illusion,

Captivate Glide, Exhibit II 4G, Stratosphere, Transform Ultra, Admire, Conquer 4G, Dart, Galaxy

Player 4.0, Galaxy Player 5.0, Galaxy Note 10.1,Galaxy Tab 7.0 Plus, and Galaxy Tab 8.9

(collectively, the “Accused Products”).

FIRST CLAIM FOR RELIEF

(Declaration of Non-Infringement)

46. The Samsung Counterclaimants restate and incorporate by reference each of the

allegations of paragraphs 1 through 45 of these Counterclaims as though fully set forth herein.

47. Apple claims to be the owner and assignee of all rights, title and interest in and

under the Apple Patents In Suit.

48. Apple has accused the Samsung Counterclaimants of infringing the Patents In Suit

and has created a substantial, immediate, and real controversy between the parties as to the non-

infringement of each of the Patents In Suit.


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49. The Samsung Counterclaimants do not infringe and have not infringed the Patents

In Suit through their using, selling, and/or offering to sell, in the United States and/or importing

into the United States, one or more of the Accused Products.

SECOND CLAIM FOR RELIEF

(Declaration of Invalidity)

50. The Samsung Counterclaimants restate and incorporate by reference each of the

allegations of paragraphs 1 through 49 of these Counterclaims as though fully set forth herein.

51. Apple contends that the Apple Patents In Suit are valid and has created a

substantial, immediate, and real controversy between the parties as to the invalidity of these

patents.

52. Each and every claim of each of the Apple Patents In Suit are invalid for failing to

satisfy one or more of the conditions for patentability specified in Title 35 of the United States

Code, including without limitation Sections 101, 102, 103, and 112.

THIRD CLAIM FOR RELIEF


53. The Samsung Patent Counterclaimants re-allege and incorporate by reference the

allegations of Paragraphs 1-52 of these Counterclaims as though fully set forth herein.

54. Upon information and belief, Apple is infringing and has infringed the ’087 patent

through the manufacture, use, importation, offer for sale, or sale of at least the iPhone 4, iPhone

4S, iPad 2, and New iPad (collectively, “’087 Accused Products”).

55. Upon information and belief, Apple will continue to infringe the ’087 patent unless

and until they are enjoined by this Court.

56. Apple had actual notice of its infringement of the ’087 patent, including a detailed

explanation of how the ’087 Accused Products directly infringe the claims of the ’087 patent, and

how Apple’s customers and/or end users of Apple’s products directly infringe the claims of the

’087 patent by using the ’087 Accused Products, no later than September 2010, and when

Samsung declared the ’087 patent to ETSI no later than May 16, 2006. Notwithstanding Apple’s

actual notice of infringement, Apple has continued to manufacture, use, import, offer for sale, or


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sell the ’087 Accused Products with the knowledge or willful blindness that those products

infringe the '087 patent and that its actions will induce Apple’s customers and end users to infringe

the ’087 patent.

57. Apple has also induced and continues to induce others to infringe the ’087 patent in

violation of 35 U.S.C. § 271 by encouraging and facilitating others to perform actions known by

Apple to be acts of infringement of the ’087 patent with intent that those performing the acts

infringe the ’087 patent. Upon information and belief, Apple performed these acts with

knowledge of the ’087 patent and with the knowledge or willful blindness that such induced acts

would constitute infringement. Upon information and belief, Apple, inter alia, advertises

regarding the ’087 Accused Products, publishes specifications and promotional literature

describing the operation of those devices, creates and/or distributes user manuals for the Accused

Products, and offers support and technical assistance to its customers. Consumers of these

products then directly infringe the ’087 patent.

58. The '087 Accused Products were especially made or especially adapted for use in

infringement of the claims of the ’087 patent, and are not a staple article or commodity of

commerce suitable for substantial non-infringing use. Therefore, Apple contributed to the

infringement of the claims of the ’087 patent.

59. Upon information and belief, as of the date Apple received knowledge of its

infringement of the ’087 patent, Apple’s infringement is, and has been willful.

60. Apple has caused, and will continue to cause, Samsung irreparable injury and

damages by infringing the ’087 patent. Samsung will suffer further irreparable injury, for which

it has no adequate remedy at law, unless and until Apple is enjoined from infringing the ’087

patent.

FOURTH CLAIM FOR RELIEF





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through the manufacture, use, importation, offer for sale, or sale of at least the iPhone 4, iPhone

4S, iPad 2, and New iPad (collectively, “’596 Accused Products”).






’596 patent by using the ’596 Accused Products, no later than the filing date of Samsung’s

counterclaims, and when Samsung declared the ’596 patent to ETSI, no later than May 6, 2010.

Notwithstanding Apple’s actual notice of infringement, Apple has continued to manufacture, use,

import, offer for sale, or sell the ’596 Accused Products with the knowledge or willful blindness

that those products infringe the '596 patent and that its actions will induce Apple’s customers and

end users to infringe the ’596 patent.
















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patent.

FIFTH CLAIM FOR RELIEF





through the manufacture, use, importation, offer for sale, or sale of at least all iPhones, all iPads,

all iPod Touches, all Macs, all MacBooks and all iMacs (collectively, “’470 Accused Products”).







counterclaims. Notwithstanding Apple’s actual notice of infringement, Apple has continued to

manufacture, use, import, offer for sale, or sell the ’470 Accused Products with the knowledge or

willful blindness that those products infringe the '470 patent and that its actions will induce

Apple’s customers and end users to infringe the ’470 patent.







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patent.

SIXTH CLAIM FOR RELIEF






all iPod Touches, all Apple computers, Apple TV, iCloud, and iTunes (collectively, “’757

Accused Products”).







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Counterclaims. Notwithstanding Apple’s actual notice of infringement, Apple has continued to























patent.


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SEVENTH CLAIM FOR RELIEF





through the manufacture, use, importation, offer for sale, or sale of at least all iPads and the

iPhone 4, the iPhone 4S and the iPod Touch (4th Gen.) (collectively, “’058 Accused Products”).







Counterclaims. Notwithstanding Apple’s actual notice of infringement, Apple has continued to


willful blindness that those products infringe the ’058 patent and that its actions will induce













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patent.

EIGHTH CLAIM FOR RELIEF






and iPod Touches (collectively, “’179 Accused Products”).





how, and Apple’s customers and/or end users of Apple’s products directly infringe the claims of

the ’179 patent by using the ’179 Accused Products, no later than September 2010.

Notwithstanding Apple’s actual notice of infringement, Apple has continued to manufacture, use,

import, offer for sale, or sell the ’179 Accused Products with the knowledge or willful blindness

that its actions will induce Apple’s customers and end users to infringe the ’179 patent.




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patent.

NINTH CLAIM FOR RELIEF






and iPod Touches (collectively, “’449 Accused Products”).




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patent.

TENTH CLAIM FOR RELIEF





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through the manufacture, use, importation, offer for sale, or sale of at least all iPhones, all 3G

iPads with cameras, the iPod Touch (4th Gen.), all Apple computers and iTunes (collectively,

“’239 Accused Products”).









willful blindness that those products infringe the ’239 patent and that its actions will induce

















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patent.

PRAYER FOR RELIEF FOR SAMSUNG COUNTERCLAIMANTS

WHEREFORE, the Samsung Counterclaimants respectfully request entry of judgment as

follows:

A. That the Court dismiss with prejudice any and all claims of Apple’s Complaint and

order that Apple take nothing as a result of the Complaint and that all of Apple’s prayers for relief

are denied;

B. That the Court find and declare, and enter judgment, in favor of the Samsung

Counterclaimants and against Apple that the Samsung Counterclaimants have not infringed any of

the Apple Patents In Suit;

C. That the Court find and declare, and enter judgment, in favor of the Samsung

Counterclaimants and against Apple that each and every claim of the Apple Patents In Suit is

invalid;

D. That this case be declared “exceptional” under 35 U.S.C. § 285 and that the

Samsung Counterclaimants be awarded their attorneys’ fees, expenses, and costs incurred in this

action;

E. That Apple be ordered to pay all costs associated with this action; and

F. That the Court grant to the Samsung Counterclaimants such other and further relief

as may be deemed just and appropriate.

PRAYER FOR RELIEF FOR SAMSUNG PATENT COUNTERCLAIMANTS

WHEREFORE, the Samsung Patent Counterclaimants respectfully request entry of

judgment as follows:


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A. That Apple be declared to have infringed, induced others to infringe and/or

committed acts of contributory infringement with respect to the claims of Samsung’s Patents In

Suit as alleged above;

B. That Apple and its officers, agents, servants, employees, and all those persons

acting or attempting to act in active concert or in participation with them or acting on their behalf

be immediately, preliminarily and permanently enjoined from further infringement of Samsung’s

Patents In Suit;

C. That Apple be ordered to account for and pay to the Samsung Patent

Counterclaimants all damages caused to them by reason of Apple’s infringement of Samsung’s

Patents In Suit pursuant to 35 U.S.C. § 284;

D. That Apple be ordered to pay treble damages for willful infringement of each of

Samsung’s Patents In Suit pursuant to 35 U.S.C. § 284;

E. That this case be declared “exceptional” under 35 U.S.C. § 285 and that the

Samsung Patent Counterclaimants be awarded their attorneys’ fees, expenses, and costs incurred

in this action; and

F. That the Samsung Patent Counterclaimants be granted pre-judgment and post-

judgment interest on the damages caused to them by reason of Apple’s infringement of Samsung’s

Patents In Suit.


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DEMAND FOR JURY TRIAL

SEC, SEA, and STA hereby demand a jury trial on all issues.

DATED: September 14, 2012 QUINN EMANUEL URQUHART & SULLIVAN, LLP

By /s/ Patrick M. Shields Charles K. Verhoeven

Kevin A. Smith Kevin P.B. Johnson Victoria F. Maroulis William C. Price Patrick M. Shields John Caracappa (pro hac vice) Steptoe & Johnson, LLP 1330 Connecticut Avenue, NW Washington DC 20036 TEL: 202-429-6267 FAX: 202-429-3902 Attorneys for Defendants and Counterclaimants SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., and SAMSUNG TELECOMMUNICATIONS AMERICA, LLC


Documents

Samsung Counterclaim Sept. 14 2012